Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  December 16, 2019

 

 

Introduction

 

This Office action supersedes the preceding Office action dated December 16, 2019 and incorporates all outstanding refusals and/or requirements.  See id. 

 

Applicant must respond to all issues raised in both this and the preceding Office action within six months from the date of this Office action to avoid abandonment of the application.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §1104.10(a).

 

 

Introduction

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Search for Conflicting Marks

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Identification of Goods/Services

 

Class 035 identification of goods/services is accepted.  However, the identifications of goods/services for Class 009, 042 and 043 are indefinite.

 

The identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Specifically, the language relating to robot is indefinite and must be clarified.  The dictionary definition of robot is a machine capable of carrying out a complex series of actions automatically, especially one programmable by a computer or a machine resembling a human being and able to replicate certain human movements and functions automatically. http://www.lexico.com/en/definition/robot

 

As a general rule, robots are classified based on their function. In practice, robots are generally classified as machines in Class 7 or as computers in Class 9, except when the robots have specialized functions, e.g., surgical robots in Class 10, toy robots in Class 28.

 

In this case, if the goods are humanoid robots with artificial intelligence or robots with artificial intelligence, then the ID should indicate it, the intended use should be clarified, and the goods should be classified in Class 9, e.g., Humanoid robots with artificial intelligence for scheduling, arranging, and providing information in association with business meetings.

 

The wording “scheduling, arranging and providing information in association with meetings” is ambiguous. The wording is unclear because it could include various functions, e.g. reminders to attendees about the scheduled meetings, computer programming information for software developer meetings, safety information for police officer meetings.  Although the ambiguity is not significant for humanoid robots with artificial intelligence, the vague wording creates ambiguity as to the intended use of the goods.

 

If the goods do not incorporate artificial intelligence to perform their functions, then it may not be accurate to characterize the goods as “robots,” see dictionary definition.  It may be accurate to describe the goods as computer hardware and software in Class 9. The applicant could adopt the following, for example, if accurate:

 

Robotic computer hardware sold with integrated computer software for scheduling business meetings in Class 9

 

Additionally, all software in Class 9 must indicate whether the software is recorded or downloadable.  

 

The wording “providing robots” in Class 043 is indefinite, because it is unclear if applicant is renting out robots (Class 042), manufacturing robots (goods class such as Class 009, 007), custom manufacturing robots (Class 040).     

 

Applicant may adopt the following wording, if accurate: 

 

 

Class 009             Downloadable software which allows users to participate in meetings and classes; Robotic computer hardware sold with integrated computer software for scheduling business meetings

 

Class 042             Rental of robotic computer hardware sold with integrated computer software for scheduling business meetings; computer services, namely, hosting online web facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; rental of server memory space for hosting electronic bulletin boards, electronic meeting room, and chat room via computer communication network

 

Class 043             Rental of meeting rooms; Rental of rooms for social functions; Rental of conference rooms; Providing conference rooms via a member club service; Providing facilities for conferences and meetings

 

 

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Significance of Wording

 

The examining attorney requires information about the goods/services and/or the mark to determine whether all or part of the mark is merely descriptive as applied to the goods and/or services.  TMEP §814.  Applicant must specify whether the wording “TESSERACT” has any significance in a foreign language, as a geographic location, in the robotic or computer trade or industry, or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).

 

Trademark Rule 2.61(b) states “[t]he examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Page, 51 USPQ2d 1660 (TTAB 1999)(failure to comply with request for information constitutes grounds for refusal); In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/W. Wendy Jun/

W. Wendy Jun

Examining Attorney

Law Office 103

wendy.jun@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 16, 2019 for

U.S. Trademark Application Serial No. 88660535

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/W. Wendy Jun/

W. Wendy Jun

Examining Attorney

Law Office 103

wendy.jun@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”